Playing Defense: How Trademark Protection Can Enhance and Protect Your Brand

March 8, 2018 by Trepanier MacGillis Battina P.A.

Many people may know that the use of the term Super Bowl® is protected by the National Football League (NFL®) . Professional football actually provides many examples of the use of trademarks to protect valuable brands. The Minnesota Vikings® and Philadelphia Eagles® – both registered trademarks in their own right – applied for trademark protection for slogans used by the respective football teams throughout the 2017-2018 playoffs. Did you think the Vikings would seek trademark protection when you heard Paul Allen make his iconic “Minneapolis Miracle”™ touchdown call? What about the Vikings’ playoff football slogan, “Bring it Home™ ,” which, unfortunately, failed to come to fruition thanks to the Philadelphia Eagles “Fly Eagles Fly™”ing their way to a win over the Vikings? The Eagles’ division rivals, the Washington Redskins®, had their team trademark challenged in court as an offensive term, although a recent U.S. Supreme Court decision has probably rendered that dispute moot. What about the Eagles’ Super Bowl victory in Minneapolis over the New England Patriots® by way of the “Philly Special™ ”? Or maybe you just watched the Super Bowl for the commercials. In which case, you undoubtedly witnessed numerous variations of the infuriatingly catchy Bud Light® catchphrase “dilly dilly™” You may have also heard about a Minnesota craft brewer avoiding the pit of misery by changing the name of its beer after receiving a cease and desist medieval soliloquy from that same large, national brewing company.

These are just a few examples of the steps companies can take to protect their brands. But you don’t need to be a company valued in the billions to be able to protect your image and brand. A trademark can help you set your business apart from competitors, and trademark registration can prevent others from using the goodwill you worked so hard to develop for their own gain. Just by using a name or slogan in commerce, you have a protectable interest in your brand, which can include stopping others from using a name or slogan that is confusingly similar to your own.

What is a Trademark?

Under the Lanham Act, a trademark is any word, name, symbol, or device that indicates the source or origin of goods and is capable of distinguishing goods. A service mark is nearly identical to a trademark, except that it applies to services rather than goods. Trademark and service mark protection provide a company the exclusive right to its own marketable image. They act to prevent the diversion of sales, disparagement of the owner’s name, and dilution of the symbol of origin. The main purpose of a trademark is to identify the source of goods or services and distinguish them from those provided by others. As a result, trademark protection serves not only to protect the mark’s owner, but to protect the consumer so that she knows what she is purchasing and from whom.

Trademarks and service marks can be in the form of single words, word strings, slogans, names, letters, numbers, drawings, devices, sounds, signs, product designs, packages, configurations, a single color, multiple colors, and fragrances. However, a mark must be distinctive to differentiate the good or service. To be distinctive a mark must be: (i) fanciful – coined or “made up” words (e.g. KODAK®); (ii) arbitrary – real words unrelated to the goods they designate (e.g. Apple®); (iii) suggestive – calling to mind some aspect of the product, but requiring “imagination, thought and perception to reach a conclusion as to the nature of goods” (e.g. Microsoft®); or descriptive – implying the goods’ function, characteristics, ingredients, method of use, or geographic origin (e.g. International Business Machines®). Descriptive marks require either distinctiveness or a “secondary meaning.” Secondary meaning refers to a consumer perception, developed over time, relating the trade or service mark to a source of goods or services, and it can be proven by: (i) long and exclusive use; (ii) extensive sales and promotion; (iii) public survey evidence; or (iv) other convincing evidence, such as affidavits from the public verifying their association of the mark with the mark’s owner and goods.

Fanciful, arbitrary, and suggestive marks are considered “inherently distinctive,” whereas surnames, foreign words, and misspellings require more analysis. Surnames, like descriptive marks, can receive protection if they achieve distinctiveness or secondary meaning. Factors that affect the ability to register surnames include whether the surname is rare, whether the term is the surname of anyone connected with the applicant, whether the term has any recognized meaning other than as a surname, whether it has the look and feel of a surname, and, in cases of stylized rather than standard word marks, whether the stylization of lettering is distinctive enough to create a separate commercial impression. Generic words, however, cannot receive trademark protection, as other businesses need such words to compete. For example, if only one company could use the word “flour” or “shoe,” what would competitors call their product? As a result, an applicant must disclaim generic terms from a mark.

Although you can file an “intent-to-use” application, trademark protection in the United States requires the mark to be in “use,” which, in turn, requires the mark to be placed on the goods, containers for the goods, tags or labels affixed to the goods, or used on the documents associated with the goods or their sale. Service marks must be used or displayed in the sale or advertising of the services. As a result, an “intent-to-use” application requires the applicant to file a statement of use before receiving trademark protection.

Trademarks must be managed carefully. Words that were once protected as trademarks may fall victim to “genericide” over time. “Genericide” describes the process by which marks, once referring to specific brands, slowly become the words by which we refer to categories of goods. Commonplace words like “escalator,” “aspirin,” and “thermos” were once registered trademarks referencing specific brands, but have since lost their protection. To preserve trade and service mark protection, word marks should be used as adjectives and not verbs. Marks should also be distinguished from other text through capitalization, special size or typeface, quotations, correct designations (®, ™), spelling the mark correctly, and never using the mark as a plural or possessive. For example, Velcro Brand® is currently waging a war to prevent loss of trademark protection through genericide and has resorted to unconventional means to convince the public to recognize it as a brand, rather than a category of products.

Why Should I Register for Trademark Protection?

Trademarks registered with the United States Patent and Trademark Office receive benefits such as: (i) nationwide constructive notice of the markholder’s right (courts assume other users know about the markholder’s use, regardless of whether they actually know); (ii) use of the “®” designation; (iii) the ability to prevent entrance into the United States of goods bearing infringing trademarks through U.S. Customs Officers; (iv) prima facie evidence of exclusive rights in the mark; and (v) a registered mark used for five years becomes “incontestable” by others seeking to use the mark (though incontestable marks may still fall victim to genericide).

Further, your ability to protect your brand, or even continue using your brand, may hinge on securing trademark protection. For example, in the 1950’s, two business entities went by the name “Burger King,” one that developed into the familiar chain today and another that operated out of a single location in Mattoon, Illinois. The Burger King® chain sued the Mattoon location for use of the Burger King trademark in 1968, but, because the Mattoon location registered a state trademark before the Burger King chain federally registered its trademark, the court allowed the Matton location to continue operating. Burger King of Fla., Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968). Today, there is still a standalone Burger King restaurant in Mattoon, Illinois and the familiar Burger King chain cannot legally open a restaurant within a 25 mile radius of it.

How Do I Register for Trademark Protection?

Trademarks may be filed at either the federal or state level. Federal registration requires filing an application for registration with the United States Patent and Trademark Office. Federal trademarks have a term of 10 years, and can be renewed indefinitely if the mark is in continued use, appropriate documents are filed, and renewal fees are paid. A Minnesota trademark can be filed with the Minnesota Secretary of State. State trademark registration is a much less intensive procedure than federal registration but confers fewer advantages and weaker overall protection.

Conclusion

Although you may already have some protection in place to use your name or slogan under the common law, federal trademark registration can add an extra level of protection for both for you and your customers. In addition to the benefits of registering a trademark with the USPTO discussed above, a violation of your rights under the Lanham Act entitles you to recover statutory damages (3x) and attorneys’ fees. Further, a Minnesota trademark attorney can advise you of the benefits of finding the right brand before you begin using a mark in commerce. For these reasons, discussing the benefits of, and seeking, registration of a trademark with the USPTO can be a cost-effective way to protect your business and to prevent others from using a confusingly similar mark that can confuse customers and reduce your brand. Although, not all name brands or slogans are capable of registration, the Minnesota trademark attorneys at Trepanier MacGillis Battina P.A. are available to assist with all steps along the way for your trademark consultation, registration, and enforcement.